RealTime IT News

Chipmakers Settle Patent Spats

After years of disputing their patents, two chipmaking rivals are burying the hatchet.

In a joint statement issued Monday, Broadcom said it has dropped all outstanding patent and antitrust litigation against Microtune .

Instead, the two companies have entered into a separate patent cross-license agreement worth $22.5 million, "whereby patents claiming priority prior to the effective date of the license agreement are licensed for the lives of the patents, and patents filed within the next four years are licensed for ten years," the statement said.

Under the agreement, all products of Irvine, Calif.-based Broadcom are licensed under all of Plano, Texas-based Microtune's patents, and all current products and future analog signal processing products of Microtune are licensed under all of Broadcom's analog signal processing patents. Additionally, Broadcom and Microtune agreed to various covenants on other issues.

The two sides have been in legal combat for more than two years. On March 21, 2002, a jury ruled in favor of Microtune in a patent infringement case against Broadcom, finding that Microtune's U.S. Patent No. 5,737,035, was valid and that Broadcom was infringing. The '035 patent covers technology found in Microtune's single-chip tuner, which allows for high-speed delivery of video, voice and data across broadband communications electronics, including cable modems, set-top boxes, digital TVs, cable telephony systems and PC/TVs.

At the time, the court barred Broadcom from selling its BCM3415 silicon tuner and certain reference boards containing the technology.

Broadcom had also filed a case in the U.S. District Court for the Northern District of California, seeking monetary damages and a permanent injunction against the manufacture and sale of devices that Broadcom feels infringe on electrostatic discharge protection circuits and other wireless technologies, which the firm said are covered by its patents No. 6,445,039B1, "System and Method for ESD Protection," and No. 5,682,379 and 6,359,872, both titled "Wireless Personal Local Area Network."

About the same time, Microtune filed antitrust claims against Broadcom, and Broadcom retaliated with an unfair trade practices complaint against Microtune with the U.S. International Trade Commission (ITC).

There have been some negotiations between the two rivals. Back in June 2003, Microtune asked the courts to dismiss Broadcom's suit alleging that solid state RF tuner products made by Microtune infringed Broadcom's U.S. Patent No. 6,377,315, "System and Method for Providing a Low Power Receiver Design."

Much of the progress began soon after Microtune experienced a major shakeup of its executive lineup when the Board of Directors asked James Fontaine to return to the company, as president and CEO. Previous company CTO Al Taddiken was appointed as COO to flank Fontaine.

Microtune currently holds 25 U.S. patents for its technology, with more than 50 applications pending approval that span its RF and wireless products, containing more than 2,000 supporting claims.

Broadcom currently has 250 U.S. patents under its belt, out of which 100 relate to tuner, mixed signal and wireless technologies.